Tegal Corporation v. Tokyo Electron America Inc.

• Decision Date: 16 July 2001
• Docket Number: DEFENDANT-APPELLANT,PLAINTIFF-APPELLEE
• Citation: 59 USPQ2d 1385,257 F.3d 1331
• Parties: (Fed. Cir. 2001) TEGAL CORPORATION,v. TOKYO ELECTRON AMERICA, INC. TEGAL CORPORATION,v. TOKYO ELECTRON AMERICA, INC. TEGAL CORPORATION,v. TOKYO ELECTRON AMERICA, INC. 00-1009, 00-1209, 00-1307
• Court: U.S. Court of Appeals — Federal Circuit

Page 1331

257 F.3d 1331 (Fed. Cir. 2001)

TEGAL CORPORATION, PLAINTIFF-APPELLEE v. TOKYO ELECTRON AMERICA, INC. DEFENDANT-APPELLANT TEGAL CORPORATION, PLAINTIFF-APPELLEE v. TOKYO ELECTRON AMERICA, INC. DEFENDANT-APPELLANT TEGAL CORPORATION, PLAINTIFF-APPELLEE v. TOKYO ELECTRON AMERICA, INC. DEFENDANT-APPELLANT

00-1009, 00-1209, 00-1307

United States Court of Appeals for the Federal Circuit

July 16, 2001

Appealed from: United States District Court for the Eastern District of Virginia Judge James R. Spencer

[Copyrighted Material Omitted]

John B. Streeter, Keker & Van Nest, L.L.P., of San Francisco, California, argued for plaintiff-appellee. With him on the briefs were James M. Emery, Eugene M. Paige, and Steven A. Hirsch. Of counsel on the briefs were Warren E. Zirkle and Robert M. Tyler, McGuire, Woods, Battle & Boothe LLP, of Richmond, Virginia.

Edgar H. Haug, Frommer Lawrence & Haug LLP, of New York, New York, argued for defendant-appellant. With him on the briefs were Steven M. Amundson, and Robert E. Colletti.

Before Lourie, Bryson, and Linn, Circuit Judges.

Linn, Circuit Judge

Three appeals are addressed in this opinion. In the first, Tokyo Electron America, Inc. ("TEA") seeks review of a final judgment of infringement from the District Court for the Eastern District of Virginia. Tegal Corp. v. Tokyo Electron Am., Inc., No. 3:98CV318 (E.D. Va. Aug. 31, 1999) ("Opinion"). Specifically, TEA challenges the following holdings from the district court's opinion: (1) TEA was not entitled to a jury trial; (2) claims 1 and 7 of U.S. Patent No. 4,464,223 ("'223 patent"), issued after reexamination as U.S. Patent No. B1 4,464,223,¹ are not invalid under 35 U.S.C. §§ 102(b) as being anticipated by the Itakura reference; (3) claims 1 and 7 of the '223 Reexamination Certificate are not invalid under 35 U.S.C. §§ 103(a) as being obvious over the Nippon Telegraph and Telephone Corp. ("NTT") reference; (4) the claims of the '223 Reexamination Certificate are not unenforceable for the failure of Tegal Corp. ("Tegal") to disclose the NTT reference; (5) TEA willfully infringed claims 1 and 7 of the '223 Reexamination Certificate, both before and after Tegal filed suit; and (6) the case was exceptional, under 35 U.S.C. §§ 285, and merited attorney fees for Tegal. TEA also appeals the injunction issued against it by the district court, maintaining that it is overbroad. We affirm the district court's decision with respect to: (1) neither party having a right to a jury trial; (2) the finding of infringement; (3) the decision that the claims of the '223 Reexamination Certificate are enforceable; and (4) the non-obviousness decision. However, we vacate and remand: (1) the finding that Itakura did not anticipate the '223 patent; (2) the findings of pre-filing and post-filing willfulness; (3) the finding of an exceptional case; (4) the award of attorney fees; and (5) the entry of the injunction.

In the second appeal, TEA seeks review of a final order awarding Tegal attorney fees in the amount of $842,129.03. Tegal Corp. v. Tokyo Electron Ltd., Inc., No. 3:98CV318 (E.D. Va. Jan. 20, 2000).² In its appeal brief, TEA does not dispute the actual amount of the award. Rather, TEA argues that the award was made in error because it rested on the allegedly faulty findings that TEA had willfully infringed and that this was an exceptional case. As the parties were informed at the oral hearing, these arguments were fully briefed in the first appeal and there are no additional issues to be considered in the second appeal.

In the third appeal, TEA seeks review of a final order which clarified that the injunction extends to plasma etchers originally sold before Tegal began marking in accordance with 35 U.S.C. §§ 287(a). Tegal Corp. v. Tokyo Electron Ltd., No. 3:98CV318 (E.D. Va. Mar. 17, 2000).³ In light of our vacating the injunction in question, the issue presented in this third appeal is moot.

BACKGROUND

A. The '223 Patent

The '223 patent is directed to plasma reactors, which are used in the fabrication of semiconductor devices. In a plasma reactor, sometimes called an "etcher," gas is injected into a low-pressure, sealed chamber where it reacts with an electric field established between electrodes to create a plasma. Although the construction of the claim terms "plasma" and "electrode" are debated issues in this appeal, some general comments can be made at this point. The plasma is created in a process called dissociation in which the electric field imparts energy to the gas within the chamber. Although a number of reactions and collisions occur between the particles in the chamber, the critical one for the purpose of plasma etching is the creation of positively charged ions.

In the etcher, the ions are induced to strike a wafer surface, or "workpiece," situated within the chamber, with sufficient force to strip material away from the workpiece. By controlling the ion behavior, extremely precise patterns can be created, thus allowing miniaturization of semiconductor devices. Two variables that are important in controlling the ion behavior are the ion energy and the ion density. Preferably, the ion energy and the ion density can be kept at high levels. However, prior to the '223 patent, this was allegedly not possible. '223 patent, col. 2. The '223 patent teaches that standard prior art etchers applied an alternating-current ("AC") electric field between the etcher's electrodes that was at either a low frequency or a high frequency. See id. High frequencies increased the ion density, allowing a high etch-uniformity, but did not produce high ion energy. Id. Low frequencies, conversely, increased the ion energy, allowing a high etch-rate, but did not produce high ion density. Id. The '223 patent discloses a method and apparatus for maintaining both of these variables at a higher level by applying both a high frequency and a low frequency simultaneously to certain electrodes in the etcher. Id. at cols. 1-2. This allows both a high etch-rate and high etch-uniformity. Id.

Figure 2 of the '223 patent, reproduced below, discloses an embodiment of the claimed invention. [Tabular or Graphical Material Omitted]

Figure 2 is a cross-sectional view of a triode etcher, an etcher with three electrodes 10, 12, 14. Conversely, much of the prior art, though not all, utilizes diode etchers, which include only two electrodes. The first electrode 10 and the third electrode 14 are generally circular, that is, shaped like a flat plate. '223 patent, col. 2. The second electrode 12 is ring-shaped. Id. Ring-shaped ceramic insulators 16, 18 provide electrical isolation between the first 10 and second 12 electrodes and the second 12 and third 14 electrodes, respectively. Id. The three electrodes 10, 12, 14 and two insulators 16, 18 bound the generally cylindrical reaction volume 20. Id.

In a preferred embodiment of the invention, the high frequency power supply 30 is coupled to the second electrode 12, a low frequency power supply 36 is coupled to the third electrode 14, and a common ground is coupled to the first electrode 10. Id. at cols. 2-3. After a workpiece is placed on the third electrode 14 and the chamber is evacuated to the desired low pressure, the power supplies 30, 36 are energized. Id. at col. 3. The two power supplies 30, 36 create a plasma within the reaction volume, id., and cause "maximum dissociation . . . as well as imparting a high ion energy to the ions within the plasma," id. at col. 3, ll. 41-42.

TEA was found to infringe claims 1 and 7 of the '223 Reexamination Certificate. Those claims are reproduced below.

1. A reactor apparatus including a reaction volume into which reactants are injected and from which reaction products are exhausted, and in which said reactants are acted upon by electric fields to form a plasma thereof, said apparatus comprising:

first, second, and third electrodes, said first electrode coupled to electrical ground,

said second electrode selectively coupled to a high frequency source of AC power,

said third electrode selectively coupled to a low frequency source of AC power, and wherein one of said electrodes is adapted for holding a workpiece.

7. A plasma reactor for treating a workpiece in a glow discharge comprising:

first, second, and third electrodes separated by insulators for defining a reaction volume in which said workpiece is located;

means for admitting reactants to said reaction volume and for removing reaction products from said reaction volume;

a first high frequency AC power supply coupled between said first electrode and said second electrode;

a second low frequency AC power supply coupled between said first electrode and said third electrode;

an electrical ground coupled to said first electrode;

said first and second power supplies producing different frequencies respectively above about 10 Mhz and below about 1 Mhz for causing a glow discharge in said volume.

'223 Reexam. Cert., col. 1, ll. 25-37 (claim 1), col. 2, ll. 19-43 (claim 7).

B. The Accused Device

TEA challenges the district court's judgment that TEA's IEM etchers, models 65DI and 85DI, infringe the '223 patent. A diagram showing the pertinent aspects of Model 85DI is reproduced below.

[Tabular or Graphical Material Omitted]

The diagram depicts top and bottom electrodes and a grounded chamber wall. TEA does not dispute that the top and bottom electrodes are connected to high and low frequency power supplies. In operation, a workpiece is placed on the bottom electrode and the top and bottom electrodes are powered, creating a plasma.

The parties' dispute in this case centers on two aspects of the IEM etchers. First, the parties dispute whether the plasma, as properly construed, is confined to the volume between the top and bottom electrodes, or whether it is merely concentrated there and extends to the grounded chamber wall. Second, the parties disagree on whether the grounded chamber wall is an electrode, when...